Recent Case Notes & Commentary

EVIDENCE: THE CURIOUS PANEL : CAN IT USE PRIVATE RESEARCH?


Cognizant Technology Solutions U.S. Corporation v. Duan Xiang Wang

Forum Claim Number: FA2006001901804

<congizant.com>

3 August 2020

As a recurring theme in domain name disputes, this case emphasises the need to bring proper evidence to support any allegations made. It also highlights the scope of the UDRP for the panel to conduct its own research in the absence of evidence from the parties.

Often a Complainant will succeed because the Respondent simply failed to respond and the case is undefended. However, we also see cases where Complainants occasionally make unfounded allegations for which there is no evidence.

In these cases, the Complainant runs the risk of losing, even if the case is undefended - and might even be scolded for misusing its power or bringing the claim in bad faith (see recently AIRY GreenTech GmbH v. Privacydotlink Customer 3050720).

However, as we see in this case, the Panel also has scope to conduct its own research. This is in sharp contrast to the role of a judge in traditional litigation and highlights the flexibility and adaptability of the arbitration process.

The key issue is therefore how much factual research the Panel may or should undertake in order to make a finding.

Generally speaking, the role of the Panel is to make a decision based on the evidence presented to it (UDRP Rule 15(a)). However, the Panel may also determine the admissibility, relevance, materiality and weight of the evidence (Rule 10(d)). As such, there will be times (as in the Cognizant Case) when there is simply not enough evidence given by both parties to enable the panel to make a decision.

This issue was discussed in the 2017 WIPO Jurisprudential Overview 3.0, and, although it cannot bind panelists in their decision-making process, it suggests that the Panel may put on a slightly more inquisitorial hat and do some of its own research. However, this is a limited right and it should not be thought that the Panel may take an extensive part in the proceeding to the extent that it is providing evidence that the parties should provide themselves. Thus, it is suggested by the Overview that a panel might visit the website in question, meaning presumably the website to which the disputed domain name resolves.( It might be more contentious whether the Panel may visit the website of the Complainant to see what it has been up to!). It is also suggested that the Panel may explore internet archives which includes the famous Wayback Machine and Wikipedia and may look at trademark registration databases.(The latter sometimes reveals interesting information that the party should have revealed itself, for example that its trademark was subject to a disclaimer that it did not claim exclusive rights to a word in its trademark, except when it was used in that way, i.e. used in the trademark).

Interestingly, in the same WIPO discussion it was suggested that the Panel may also draw inferences from an absence of evidence, such as a failure to reply. That can clearly be done, depending of course on the facts. This is in further contrast to a typical court setting, in which silence or lack of defence is usually not taken as evidence or an admission - and the onus remains strictly on the prosecutor or plaintiff to prove its claims.

The Cognizant Case clearly applies these flexible principles - and flexible they must always be, or the arbitral function will have been compromised. The Panel may , for example, conduct a small amount of research by visiting the website in question, and examining internet archives to see if there is an active email account attached to the domain name. In the absence of a clear use of the website, the Panel may well apply the ‘doctrine of passive holding’ and uphold the Complainant’s request to have the domain transferred.

It must always be remembered that although the Panel has power to conduct its own research, it should be done modestly and not on matters of great substance that may by themselves determine the outcome of the case.

In the Cognizant Case, the panelist searched the Internet Archive and found that the domain name had not been used in the past and was not presently being used for an email service. Accordingly, as it was not being used at all, it could not have been used for a bona fide purpose. This seems to have helped the panelist conclude that the Respondent could not have shown that it had a right or legitimate interest in the domain name and the Complainant succeeded.

Finally, an interesting question remains to be asked. If the evidence discovered by a panel in private research is really very significant and could be pivotal to the decision, should not the panel bring this to the notice of the other side, i.e. the side to whose prejudice the evidence may be used and give it an opportunity to reply to the new evidence? We leave that question for you to ponder.